Tuesday, June 28, 2011

Just weeks before the release of the much anticipated sequel to the highest grossing comedy of all time, The Hangover, tattoo artist S. Victor Whitmill filed a copyright infringement lawsuit against Warner Brothers. Whitmill alleged that the facial tattoo worn by actor Ed Helms in The Hangover II, which duplicated the tattoo Whitmill designed for boxing champ Mike Tyson, infringed on his copyright in the tattoo. Specifically, Whitmill sought a preliminary injunction, which if granted, would have halted the film’s long awaited Memorial Day weekend release.

When determining whether or not to grant an injunction, a judge considers the likelihood of the claim succeeding at trial while simultaneously evaluating the hardships that would result if the injunction were granted. Luckily for Hangover fans everywhere, Judge Catherine D. Perry, the U.S. District Court Judge presiding over The Hangover II copyright suit, denied Whitmill’s motion for a preliminary injunction. Judge Perry concluded that the harm it would cause to both Warner Bros. and third parties were simply too great. At the time Whitmill sought to enjoin the film’s release, Warner Bros. had already spent nearly $80 million on promoting the film and it had released prints of the film to over 3,700 theaters across the country. If The Hangover II’s release was halted, these theaters which had been promoting the film and selling advanced tickets would have lost millions of dollars. Further, Warner Bros. would likely sustain additional monetary losses because it would have been exposed to damage claims by these thousands of theaters across the country.

Despite Judge Perry’s decision to deny the preliminary injunction, Warner Bros. was not entirely off the hook. . Whitmill additionally sought a permanent injunction for what he alleged was “reckless copyright infringement," which if granted, would prevent further distribution of the film, including its DVD release. Judge Perry allowed this copyright infringement claim to go forward and indicated in her court opinion that there was a strong likelihood that the powerhouse production studio could be liable for copyright infringement in its recreation of Tyson’s tattoo without first obtaining Whitmill’s permission or consent.

However, the outcome of this case may not be as clear cut as Judge Perry’s opinion would lead one to believe. The question of how far a copyright holder’s rights extend in artwork that is on someone else’s body is unclear. . Up until this point, there have been only a handful of copyright suits involving tattoos, all of which were settled out of court. Thus, there is little legal precedent that can be used to determine the outcome of this lawsuit. Clearly artwork, even in the form of a tattoo, can be protected under copyright law. On the other hand,

Whitmill’s argument that he owns the rights to the tattoo on Tyson’s body was two-fold. First, Whitmill’s alleged that Tyson signed a tattoo release form prior to getting the tattoo, which indicated that “all artwork, sketches and drawings related to my tattoo and any photographs of my tattoo are property of Paradox-Studio Dermagraphics [Whitmill’s business].” Further, Whitmill provided the court with a copy of his copyright registration of the tattoo that went into effect on April 19, 2011.

Warner Bros. contended that even if Whitmill owned a copyright to the tattoo, it had a legal right to reproduce the tattoo in The Hangover II under the fair use doctrine. The fair use doctrine is an exception to the exclusive rights granted by copyright law which allows for limited use of copyrighted artwork without first obtaining permission from the original creator. This doctrine has been used as a defense to claims of copyright infringement in a variety of cases, including when someone recreates work owned by another rights holder in order to parody it. Warner Bros. argued that the tattoo on Helm’s face in The Hangover II was used to parody Tyson, who makes a personal appearance in the film. To successfully invoke the fair use defense, a four factor test must be satisfied. As indicated by the U.S. Copyright Office, these four factors include: “(1) the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes (2) the nature of the copyrighted work (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole (4) the effect of the use upon the potential market for, or value of, the copyrighted work.”

Judge Perry characterized Warner Bros. fair use argument as “silly.” She found that “there was no parody” and the use of “the entire tattoo in its original form, not in parody form” was a blatant copyright infringement. Since Judge Perry presided only over the issue of whether the film’s initial Memorial Day weekend release could be halted, her court opinion was not the final word on the case. Instead, her decision served as a green light for Whitmill’s claim against Warner Bros. to go forward to trial.

However, before reaching trial, Warner Bros. and Whitmill “amicably” settled the copyright infringement lawsuit during a mediation session. Details of the settlement have not been released. What we do know is that The Hangover II’s DVD release will not be halted and, to the delight of Hangover fans everywhere, the Tyson tattoo on Helms’ face in the film will be there to stay.

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About Me

A veteran entertainment lawyer, arbitrator, expert witness and author, Mark Litwak has provided legal services or acted as a producer rep on more than 100 feature films. He is the author of 6 books including: Reel Power, Dealmaking in the Film and Television Industry (winner of the 1995 Kraszna-Krausz Book Award), Contracts for the Film and Television Industry, and Risky Business: Financing and Distributing Independent Film. He is also the author of the popular CD-ROM Movie Magic Contracts.
As a law professor, he currently teaches at the U.S.C. School of Law, and has previously taught at the Univ. of Puget Sound and Loyola Law Schools. He has been on the faculty at UCLA for 24 years. He has lectured for the American, California and Texas bar associations. A frequent speaker, he has lectured at many universities including Harvard, the American Film Institute, Columbia University and NYU. He has also presented movie industry seminars in England, Australia, South Africa and Canada.
Mark Litwak is AV®
Peer Review Rated by Martindale-Hubble and has been named a Superlawyer multiple times by the publishers of Law and Politics Magazine.